# Motion Amicus Curiae Brief — American Fruit Growers, Inc. v. Brogdex Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_0498%3A12 ## Record - **Collection:** Supreme Court brief - **Document type:** Motion Amicus Curiae Brief - **Published:** January 1, 1931 - **Citation:** 283 U.S. 1 ## Text pomanining: FILE COPY IN THE Supreme Court of the Bnited States ‘Octosen: TERM sara No. 48, American’ Fruit Growers, Inc., Petitioners, Vv. ? Broopex Company, Respondent, MOTION ON BEHALF OF THE STATES OF ALA- BAMA, ARIZONA, CALIFORNIA, FLORIDA, GEORGIA, LOUISIANA AND TEXAS FOR LEAVE TO FILE BRIEF AND TO BE ORALLY HEARD AS AMICI CURIAE AND BRIEF AS AMICI CURIAE. Cuaruie C. McCatt, Attorney-General, State of Alabama. __K. Berry PETERSON, Attorney-General, State of Arizona. | U.S. Wess, Attorney-General, State of California. Frep H. Dayis, Attorney-General, State of Florida. Grorce M. Narr, | 2 Attorney-General, State of Georgia. ; p Percy Saint, Attorney-General, State of Louisiana. _ Rosert Lee Bossirt, Attorney-General, State of Texas. November 25, 1930. » Press oF Byron 8. Apams, WasHINGTON, D. CO. ‘ABLE OF CONTENTS, MOTION. FOR LEAVE TO FILE BRIEF AND - — . a ‘ ‘ RCH ASA SEAN N IN BY OP a eT bs Bo come mt , ) and to be orally heard in thi IN \ Wk : Supreme Court of the Anited States Oc POBEN Toca \: 430, # Ne. 48.5 \ Xaenicas -Pren Ginowkns, Ise. Qlehiuaoners, \. bs y Broun x COMPANY, Be spond MX “MOTION FOR LEAVE TO FILE: BRIEF. AND to. BE ORALLY HEARD AS AMICI CURIAE. May it Please the. Court: \ The undersigned, Attorney-Generals of thie Stytes of Alabama, Arizona,: California, Florida, Georg it *\ le Lotisiana and Texas respectfully move this Honor\ able Court for leave to file the aecompanying brief \ igs ‘ause as ANC curiae, » If the Court yfants this motion, the seve ‘ral contisel will agree amongst themselves in respect of which one. of them wil] present’ or: al argument on behalf of _them all. : : CH ante (. acti, Attorney Genera, State af Alabama K. Berry Prrunaox, Attorney- General, State of Arizona: U. 8; ee Attorney-General, | State of California. Frev H. Davis, : Attorney- General, State of Florida. GroncE M. NAPEER, ° . Attorney- General, State- of Ge orgia. Percy ‘Sat, ~ Attorney- General, State of Louisiane eC - - Ropert Lee. Bossitt, Attorney-General, State of- Texas... 1 LEELE SCE SBOE AIS OB ERE ’ = i +, r Seed: . RONAN eS S809 RH RANG HRN ORS AMET RRS OS PEN AT ON HOMER ° F * M4 ° ° . . oa ‘ ad : . . . 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Ne . : . . : ; ae Ww . . i? ae 2 . 2 . : f, * é . seeciainiideaiiatianaiiiiueeretadiaias containing acon nseaes mec NMG IN ei " eusaniatecieaiaadesien . x " . a) bs ri . . of N if . _ . : ‘ \ / $ “The decision of the Cireuit Court of Appeals for. the Third Cireuit im this case i to, ‘be found in 35 ae Fed. (2) 106 (Transcript of Record, page 705) and that-of the District Court in 21 Fed, (2) 110. ; | STATEMENT OF FACTS, On the 15th day of April, 1926, respondent insti- tuted suit in the United States District Court for the district of Delaware for infringment ‘of, United ' States Letters Patent No. 1,529,461, issued March 10, 1925, to Ernest, M. Brogden. and Miles L, Trow bridge on an application filed August 15, 1923. The bill charged ‘the petitioner with infringement of certain process claims and article claims. tery The patent in suit is directed to a method of pre-.. _* serving fruit, antl mote particularly relates to “the prevention of decay of such. fruit* by’ retarding the» development of blue mold: Claim 3, which reads as 6. *# follows, may be considered as typical ‘of the. , prebete . ; claims: a yt In the preparation of fresh fruit for- market, the process which comprises’ subjecting fruit to \te action of an’ aqueous solution of borax, he\ fluidity, strength and. temperature of the — treating solution, ‘and the duration of the treat= ment, being such that exposed rind or skin tis- sues of the fruit-are effectiv ely impregnated with borax and rendered resistant to blue mold decay, | while af the same fime the fruit is not scalded: nor is its freshness or edibility otherwise sub- stantially impaired, | he The following may be taken as typical of the ar- ticle elaims : as (° Ste ae . . > . Y s . . : . . : af y " ' —_=s ? ® ; ‘ ° + 5 56. Fresh citrus fraiit of which the rind or skin ° carries borax in amount that is very small but sufficient to render the fruit resistant to’ blue mold decay. . The District Court rendered a decree holding the claims of the patent valid and tHat petitioner in- fringed claims 1 to 7, 9, 14 to 18, and 23 to 26 inelu- ‘sive. This, decision was affirmed on appeal by the Cireuit’Court.of Appeals for the Third Circuit. Pe- titioner souglit a rehearing, which was denied on— November 15, 1929. A petition aN writ of cer- fiorari was granted by this Honorable Court March 17, 1930. : ; ; OUTLINE OF ARGUMENT. “ J. Oranges as Defined in Claims 23 to 26 of the Brogden and Trowbridge Patent are not an Article of Manufacture under the Patent Stat- ates. (p.6.) .° . / a _ YI. The Process and the so-called Article‘of Manu- > f _ facture Defined in the Claims of the Brogden . and ‘Trowbridge Patentsdo not Involve Inven- tion over the Disclosure of the Bishop Patent, "No, 683,899, issued in the year 1901. (p. 11.) _ HI. If the Brogden and Trowbridge Patent is held : Valid, It will “Constitute a Serious Abridg- ment of the Rights of the Fruit Growers of p the United States. (p. 27.) Cre IV. Adoption .of a Process by an Industry Should Evidence of Invention only in a Doubtful Case. (p. 31.) V. Conclusion. . (p. =) — . Oranges as Defined in Claims 23 to 26 of the Brog- . den and Trowbridge Patent are not an Article of Manufacture under the Patent. Statutes. ‘The lower courts have held herein that claims 23 to 26 of the Brogden patent are valid and infringed | by oranges sold by the petitioner. Such oranges are . to all appearances the same as oranges -fresh from the trees and differ therefrom only by having. a * minute quantity of borax upon their rinds.. The ques- tion presented for determination by this Honorable . Court is whether such an orange is a,‘‘manufacture’’ within the meaning of that term as it is used in Sec- tion 4886 of the Revised Statutes (Section 31, _Title-. 35 U. 8. C. A.). Counsel have been unable: to find any case decided by this court wherein the precise, meaning and limits of the term ‘‘manufacture”’, in the patent sense, -is -defined. The most nearly applicable decisions of this court upon this question, however, , appear tobe in di- rect conflict with the decisions’ herein by the District Court and ‘the Circuit Court of Appeals, as will here- inafter be pointed out. The holding of the lower courts ‘to’the effect that - an orange treated in accordancé with the process. set forth in’ the patent is proper subject matter for -pat- ent protection is evidently based upon the definition of the term manufacture given in the case of Riter- Conley Manufarturing Company v. Aiken et al., 203 Fed. 699. The Circuit Court of Appeals cited that case in support of its holding that the article claims . were directed to patentable subject-raatter. . Now the - oe ae oe ee, , 7 pepe tn amg! me rn? pte ot : : Bret... ‘ease, to the effect that a roof structure is a: janu- inclusive. : ( ‘ompany, 254 Fed. 821, a patent for an oyster having ‘man, and was obviously not a-machine, a composition _ will not be questioned. A tagged oyster is still’ an ve I a ; Riter-Conley case in turn adopted the definition given in Johnson v. Johnston, 60 Fed. 618, 620, to the effect that ‘the term ‘manufacture’ as used in the patent law, has a very comprehensive sense, embracing whatever is made by the art or industry. of man, not | being a machine, a composition of matter, or a de- sign’’. While the actual holding of the Riter-Conley facture, is believed sound, it is submitted that the definition of ‘‘mamufacture’’ given: therein is far too ‘For instance, there was involved in the case of Arm- strong. Seatag Corporation v. Smith’s Island Oyster- \; @. affixed to it an identifying tag. Such a tagged oyster © 7 did not occur in nature, was made by the hand of. of matter, nor a design. Yet the court had no diffi- culty in holding that it was not a manufacture, in the following language (See page 822): : ‘If the patent in suit be supposed to cover a tagged oyster, the answer is that a tagged oyster is not a machine or a composition of matter, and it is not a manufacture. A spring chicken, with an identifying tag fastened to its leg, is closely ’ analogous. If he so desired, any fisherman could attach an identifying tag to his fish. But none of these natural products could be classed as * manufactured articles, simply because of being tagged.’’ It is believed the soundness of the above decision oyster and the intellect revolts at calling it an article © of manufacture. re 3 3 | 8 By the same: token, a tagged orange would, not be an article of manufacture, ‘although it does not occur © in nature and fits into the definition given in the Riter-Conley. case. And yet such an orange would appear to approach an article of manufacture much more than the oranges here under discussion’ which, to all appearances,:are the same as they would be in.their natural state. Similarly, such an inelusive ‘definition of the term ‘‘manufacture’’ is criticized as being too broad in the _ ay of Knight v. Reiger et al., 203 Fed. 49, affirmed he Circuit Court of Appeals for the Fourth Cir- a a 21%Fed. 935. _ The Riter-Conley: case rested its definition largely upon similar definitions given in, cases dealing with _ other branches of the law. The -logie used in such cases is equally true when trans: ferred to another branch of the law. To hold contrary. to the doctrines of the above cases would be to admit a host of new articles for patent proteetion; other types of fruit treated with borax; ° citrus fruit treated with other reagents ; lumber treated: for fire-proofing; leaves treated with. glycer- ine or, varnish for preservation; corks submitted to- ’a_eertain chemical bath; in fact, any of the number- . - less natural products treated by any pf innumerable . a similar processes. a ‘such a definition were 4 NT YORI IF tte me ’ I OPEN IGE OMIT Sus 11 adopted, could an orange: ‘coated with borax while it is still on the tree be logically’ excluded? : Certainly to include such treated natural products in the class _ of patentable inventions seems to go far beyond the intent of the statute. | It is accordingly submitted that an ‘orange, coated “with a minute quantity of borax, is,still a natural product . and not a ‘‘maiufacture’’? as that term is used in patent law, and that. the. ruling of the Court. ae Appeals. to the effect that the complete article is not found in nature, and is thus an article of | manu- ~ - facture is erroneous.’ ; I. ‘The Process and the so-called Article of Manufac. / - ture Defined in the Claims of the Brogden and ~ Trowbridge Patent do not Involve Invention over _ * the Disclosure of the Bishop Patent, No. 683, 899, issued in the year 1901. . Sisk ety It is appropriate to here inquire just what was the knowledge of the public at the time of the alleged invention by’ Brogden and Trowbridge. Or .more specifically, with what knowledge was . the public charged at that time? In view of that knowledge ‘was any inventive genius required to adopt the proc- ess of the Brogden and Trowbridge patent? The record is replete with evidence showing that the public was thoroughly informed of the antiseptic and disease-inhibitive ‘properties of borax,’ boracic acid and in general compounds containing the boric acid. radical. As a matter of fact, its.value as a specifie for blue mold decay-was well recognized by . the art. It is believed; however, that the time of this 12 - - oe — the prior art to a-single patent.- - Years prior to the adopfion of the Brogden’ and- Trow bridge process, a process substantially the same had been developed and. patented by one Simeon Bishop. _The Bishop patent, No. 683,899, which is-: sued on October 8, 1901, will be found on péges.1473 and 4474 of the’ Transcript’ of Record, atid the‘ de-. tailed comparison of it with the Brogden and Trow- bridge patent hereinafter presented. shows how com- ~ pletely it discloses the substance of the later | so- ealled ae invention. At this point one phase of this matter oulie for- ‘passing reference. It will be pointed out hérein that ‘the processes of both.the Bishop and the Brogden’ and Trowbridge- patents consist in general .of -twe identical steps; first, treatment of the oranges@in a solution of a.boric a¢id radical compound, and s@ond, the application to st orange so treated of a wax or ee gelatin coating. Th¢ processes of these two steps are. -identical in the two patents, and the final product nec- ° essarily is the same in each case. The. claims which were held to be infringed. are directed merely to the first step, namely, treatment of the orange in the ‘solution of horie acid or. borax. Omitting the second. step of the Bishop process will give “éxactly the same result as omitting the second step:of the Brogden and Trowbridge process. In this connection the at-~ tention of the Court is directed to‘the well settled doctrine that the omission of an. element: in a com- bination with its corresponding function does not ar render the elements retgined patentable. As was. ‘said in the case of Richards v. Chase Elevator Com- pany, 159 U.S. 477, 486: aueie ’ ee ; ae L ; Bhd a u : court may be sav ed by confining the consider ation of ~ 13 “While the omission of an element in a com- bination. may. constitute invention, if the result .- yet if the omission of an element is attended a corresponding omission of .the function pe formed by that element, there is no inv, the elements retained perform the’ sa as before.’’ ees - of the new combination be the same as ie ontion, if > function See also Giles et al. v. Heysinger, 180 U. S. 627; McClain v. Ortmayer, 141 V. S: 419. Bishop states that _his_precess~ts tg be used on ‘‘fruit, veg¢tables, eggs , and the like of Record, page 1473, line 3 from -)dttom). While much has been said as to the specific use af their proc- ess on oranges to control blue mold decay, Brogden -and Trowbridge, ‘in their patent specification, state ‘that: this is merely the “vreatest present utility’’ Sain the , process, and continue iret ds of “Record, } page o86, bottom) : The inv eiftion i is broad, how ev er, and the term fruit as herein employed is. to be under- stood as not necessarily restricted to fruit in the fan 8 8 sense in which the word is usually employed, but”. “7 is to be understood broadly as including hot only fruit proper but also vegetables, such as toma- . toes or the like, that can be treated. to advan- tage in accordance with the principles of ° the inyention to be hereinafter _set forth.”’.. It is to be noted that bine mold decay is not. pecu- liar to citrus fruits: Brogden and Trowbridge, by their own admissions, concede its- attack -on other. food products. Furthermore, it is to be remembered ‘that blue: mold is one of the most | common forms of . Bibra decay. ’ (Transeript — Md . a? : é y oA ™) ea ar : LJ Res ~ _ \ : : 6 *% As : 4} acd >” be ne oe decreas. pvaed t soy be + dager Sep eens, SZ : a eve, 7 i #, gre " 2 . ‘Thee Pye news. 4 ¢ 4 in ata t one 4 ¢ . J ECS BPP? iy yer ‘i. ® Whee’ 5 othe Ub ag } seat all . ptmitie: yf ' é ceauger? Serse =X fie | : : ai ue 5 | a A. “inte ’ | ks Sue Rader vote? y LRT. : , : é a cae pr een thee. Seite - gi reh. Pgaku * ba. Fact. ebeewic aw: ® apece Rew: ¥; ae ticomerd-ae £ peeneg hie. teagers . ew Bh . Ree chi 4 - 7 ‘ Herwgelen ase! t tee hedge ¢ wide Q Trae an tiget.’ ¢ id M ae » | ee, [ Ft: a + . Page yao ood ha : FY ragt berets 2 - Trow se digs ‘ie ¢ ’ Ps & by . > . : " n > s P - e oo : ° (heave Merely Sroanketes? the Sergi Ssetw sarod “3 4 ‘ ciao die : ‘ ; . fy “ne i : : teaget ; SOP lery tie Feet ya a *% Savia! Miferw . N ‘ heneie acutiie a very weak a a. how ever, cf cee @grgear Beatie wet "Bat Me tant: sl tal iv pt ope rt tide ate text daw ti the, ‘ 5 8 q ae . : ' PPERPsmpeyr - cote preeaets! . teat Soo the hevpir puree i 2 ' : . ; g a ow ‘ ote ihe tachew!l, anel auch brcadenine ia therefore. an eshys te F : . . . : ; : . wLes “atop Mor eens 7, the ofhea@.- ex agetN a car a: fi:he thn rartieal, ¢t Giets! tw Jevrat be wil : the caheal, particularly derag@@are well kn: pwriante ° ‘ a . . IRE, a: ra ty , i aepties. Thie know beelgest, i tpebe hae. haw ‘ome ery, etal... C ingirel in the Floglieh al staan “has hong berer ra | uaesd * ea. Ms “ining er. ampregnatek with horat or Konig ac ad OE ebater's View Interoé., i fieonal - phe homary. $909 929). Sue hye changes ; involve . or - egy tnerely, the substitution of an ey alent’ for the boric. xe | avid used hy Bishop. lag PERS, s | It ia of. cours® well ree ognized ‘that the aabsatitution’: 8 a compound ‘of a> substance recognized as the equivalent ‘of a substance formerly need in thre com. CORB Sa - 2 pound, doea not ssid invention. i In Hoskins Mig. Co. : oneret Electtie Co, 212 ooh wis Fed. 422, it was. said re ‘page 423 7 meee the term’ ‘horated Te ae: by . — T inet ‘ OIE ba Sarin atiepr wi octane mana ‘ i ‘ memes ‘ a Oa " sf ere a > » é ac : . 4 _A TY "tak ‘tet. tw ‘Conn peoes bichtie af tie itecy. ae iach idig = Shae cahetituent elements “4 exch cates or wie Gg hte jeteia, whet the -f Bretion. cheenlial fifopettio:n af each: entire COM pari ae TL pyhetas fimiia the afte Kotinmoan an fetes a Mie © 4, _M sikher on Patents path kad) Brew MY ‘Taker 4) Beeston, 7 -Wall. 327, 19 LL. Kd Re tree Ge poalene ey ” S ° 1’ ~ ? Aga 8 Natvlom Pmameling and Stampmg Co. v- New Pagidad Jb ma meine Ci, 1od Fed Is4, the ‘court :-23 atent “ age My: : "hl @o metalhe salt of any kind “Was previoushy ced, “the euletitution of another metallic salt’ ‘whack produced the. same reeait: woukd be ‘the etplevment metely of an equivalent.(' ‘ The “mee of ‘Western Willite Cu, "O Trinidad, As- v phali Mig ©0 . 16-F. (2) 446 contajns the following midar language (See page 450) ; , ° bad | trie, as. the trial judge recognized, that ordinarily, ‘the. reactions and phenomena of ; chemistry may sometimes dictate a rule as ‘to. " “eqnivalents, which. is at variance to that rule as apphed to mere-physical or mechanical: equiv- alents’ But, ae he ‘said, we are ‘unable to see any reason for applying-a Be ae rule. in a case wherein the ‘effect producec erating in combination upon. substances posséss- ing well-known characteristics. It is only. when. the reactions and phenomena of chemistry. are ¢ latent and undeveloped. that ‘the rule invoked by appellants has application”? 7 | ats oes w hie by one metallic sul- . ~ / “yphate is in all respects similar to those produced. “€ ‘by other metallic: sulphates,’ especially when op-,° 16 ; , ae re My oe Under the prineiple enunciated in the above fases, it is submitted that reagents’ containing fhe boric acid radical are equivalents of. the boric acid used ini Bishop’sprocess. and that their use involves no invention’ over such prior -process.. The equivalency — of borie acid and borax was well recognized by the art prior to.the Brogden and Trowbridge patent, as: ‘Is illustrated by. the patent to Storer (Transcript of ~ - ‘Record, page 1599, lines 23 to -26).— Brogden and ‘Trowbridge state that the reagent is applied as follows (Transcript of Record, page 589, last five lines,’ page 590, first, twelve lines) : \- “The method of applying the treating solution to the fruit may assume various specifically dif- ferent forms, the precise - -details of . procedure being uot essential to the invention in its broader aspects. However, where it is desirable, as may. often be the ‘ease, to carry out the process. with- - out changing prior practice any more than is’ strictly: necessary, the application. of the mold- ~ retarding agent may be effected as a part of or in conjunction ‘with the usual washing operation ° to which the fruit is initially subjected in its. _ handling -according, to “modern packing house ‘methods, especially as most of the mold-retard- ing agents herein contemplated also have excel- lent ‘cleansing. or detergent properties. Accord- ‘ingly, in the practice of the invetition, the mold- retarding agent, borax in a specific instance, may _ be added in proper mold-inhibiting quantity di- rectly to the, wash water in the usual soaking tank into which the fruit is dumped from the held boxes as it comes from saad grovés.’’ Bishop patent, the reagent is wien in ‘fan antiseptic ‘‘washed or bathed’’ (Transcript of Record, page - | d ; . ° —_ 4 : . es s ‘ . h’’, wherein the article of food is. ft 2 1474, lines 2 and 6). Bishop. uses two ounces of horacic acid to one gallon of water (Transcript of — Record, page 1474, lines 21 to 23). Such proportions will give a one anda half per cent solution. Brog-: den and Trowbridge, after stating that ‘‘the strength or concentration of the treating solution may be varied considerably within reasonable limits’’, give examples of solution ranging from two to twenty per: cent, and state that ‘‘a solution containing two. © _ per cent ‘or-more ‘of borax may be characterized as a strong solution’? (Transcript of Record, page 590, bottom; .p»ge 591, top). ° Here again, if there be any change, it ir merely an obvious carrying forward of the principles of Bishop’s’ invention, pete Bishop states that the application of bora¢ic acid in his process ‘‘is advantageous in that it prevents — decay’? (Transcript of Record, page 1474, lines 16 and 17). Brogden antl Trowbridge state (‘Transcript — of Record,’ page 586, middle) : ‘‘This invention relates to art of preparing. _. fresh fruit for market; and in particular it re- lates to processes for the treatment of citrus and _ other fruits in such manner’ that: the -develop- ment of molds and the like upon the ftuit, and especially the development of blue.mold and in- . _ fection by blue mold. spores, is prevented or ar- . rested either wholly or to such large extent as greatly to prolong the marketable life of the fruit, beyond what has been, possible heretofore a ee ’ Thus, despite thé fact that_Bishop, writing some 7 . twenty-thrée years earlier, did nbt use such scientific ‘terms’ as the later patentees, the purpose and intent. - of both is obviously the same—and the results identi- eal. => ad > ont * ah o~ = a ’ # ¢ = 4 se. Br , S “- - Sf WEY OEE TS Oe te te betes . - Pachan ® a q a 4 : Ny ogden and Trowbr idge continie as fellows (‘Tran- script of Record, page 592, middle): ‘ See) ae, ee permissible within the scope. of the invention, to rinse. the fruit with clean water contiining no treating +1 ‘eagent after its leaves the washing renee andl before ‘it enters ; the drier .* -* . sr * *- * * : * * ph we . * «* %.* Phe fruit, after passing-through the drier, carries a substantial deposit of the solid tréating: reagent, borax in the specific, example here in “question. The stronger the treating solu- tion employed,. the ereater, is of course .the amount of.this surface deposit of -white pulveru- ‘lent -material_on the fruit. “If this wereallowed to remain on the fruit, the fruit might be unmar- ketable because of its appearance, “and hence the fruit may be next treated to remove this ‘super- - ficial deposit: This can be accomplished most effectively by a. dry brushing or rubbing: of the fruit, most desirably hy means of rotary cylin- - dricat brushes of horsehair or the like operatiny at. relatively high speed. tion *: * * 99 a —$uch_rinsing and brushing, te—be earried—out—when, -a strong solution is- used, obviously reduces the amount of reagent left on the fruit. Thus, though . Brogden and Trowbridge may use a stronger solu- - of reagent, the net amount of feagent left upon the fruit as a protective film would be substantially ~ _ the same as that obtained by using Bishop’s process. Finally, they: state (Transcript. of. Record, ‘page 593, a * “From this eka on, the handling of the fruit -in further preparation for boxing and shipment may or may not involve additional papeervative a | . “trdatment in accordance with the principles of the invention. This. depends: upon whether or -not the fruit is to receive an = icone of pro- tective coating material for the purpose of pre- ' venting or reducing shrinkage and withering and of ensuring conservation of the original fresh- ness and flavor of the fruit for prolonged So of time. Generally this further treatment highly desirable, and ‘if the benefits of ‘the ‘inv ty tion. are to be realized to the fullest extent, this - further treatment should be carried out. Tt con- sistS in applying’ to the fruit a normally~ solid — protective . material,. especially: paraffin ‘or: like waxy material, jn such condition that it can be~ ‘spread all over the surface of the fruit to pro-- 3 ' duce an extremely = protective film which is ___——not noticeable ex @ expert eye and does not interfere with the so-called breathing or transpiration of the. fruit to, an undesirable ex- ~ tent, but which is effective to conserve the orig?- - nal api br and freshness Sof the fruit as. above stated.’’ | Bishop similarly. states (Prahedtint . of Record, -- page 1474, lines 2 to cia ae = a 79 . “The iinis is then. coated with” - gelatin, which excludes the air and prevents the «entrance of atmospheric germs, thereby pyevent- - ing decay. : 4 ingredien a used “ a a ‘| K ef - i Results BISHOP Fruits, vegetables, - rand the like (Ree., Briel \ Ror avic (Borie) acid | (Ree., p. 1474) ° —* p. 589) oz. to gallon—14% - To prevent dec ‘ay (Ree., D. 1474) at Gelatin (Rec., p. 1474). To. exclude air, : prevent entrance of germs, add to appearance (Rec., p. 1474) : An orange coated with boracic acid. (a reagent containing » the boric acid radical) to prevent de- _ cay; and with a protec- tive coating of - gelatin to ‘exclude germs and add to appearance.” e ~ Solution ’ ~BROGDEN AND. TROWBRIDGE Fruits and Vegetables— greatest utility citrus fruits (Ree. p. 586) | ° ’ e ° - Reagent comprising the boric acid radical: (boric acid or. borax) (Ree., 2 to 20% her ‘strong used oranges may: be rinsed with clean water,.or brushed off- When dry (Ree., pp. 591, 592) . To prevent blue mold and all kindred rot and decay organisms and ‘diseases to which fruit — , is’ susceptible (Rec., Eee 597 ) Paraffin material +(Rece., or like waxy p. 093) To form protective film -and to prevent’ wither- — ete. . shrinkage, ‘p. 593). ing, (Ree.,, An orange coated with a reagent containing the . borie acid radical fo ‘prevent decay, and | with a protective coating of or like waxy to form protec- _and conserve \paraffin’ iaterial tive fil -the orange. ht | ee if oe . 7) ; ox c GPR ° e >A | . ‘ Thus every essential step individually and in com- bination, of the Brogden and Trowbridge process is paralleled i in the process of Bishop, and if not in fact anticipated, the changes made are at least well within the knowledge of those skilled m the art and rendere iy ote; invalid the: Brogden and Trowbridge proeess.” ~Bish- op, speaking with the practical knowledge: of the art as: of the-year 1900, and writing his specification with “the conciseness typical of the applications for patent of that time, nevertheless :has spy ete 3 in full, clear, concise: “and exact iorms. “Not only did\.5 Bishop‘ ‘clearly disclose the steps of his process and the result achieved thereby, but. he informed ‘the pub-— lic of the funetions of his. ingredients—funetions iden- " tical with the functions subserved by Brogden’s ‘and _ Trowbridge’s similar, or rat least equiv alent, — a ents. , _« -The Brogden and degvusade ‘applioaties was writ: ten with the backgrgund of scientific knowledge as of ‘a date.some twenty- three years later, and under the. present practice of giving a very full description’ in. the specification; but ‘such verbosity .can not supply an absence of invention where it is in reality lacking. The later process, when reduced to its essentials, is practically and substantially: that described by Bishop. That both Bishop and Brogden ‘and Trowbridge were seeking the same result by the same means is’ further evidenced by a comparison of certain claims of the two patents. . Bishop’s first claim (Transcript -of Record, page 1474, bottom). reads as fojlows: _1. The method of. treating articles of food to . preserve ‘and enhance their value, which consists: | in Washing them with a solution’ of boracie acid’ - - and then ‘applying a coating of gesient. substan- Be wincied as Lactilacts te ; . » ‘ ’ y iG é ‘ BA: : ON & &y \ Bt \. = aN ° f XN to. LS) . * ‘yg “s “Now note the following claim ‘made - by Brogden and Trowbridge ({Pranseript af Record, ee 601): 19. In the. stepasation of reat fruit for mar- ket, the process which comprises contacting the entire surface of fresh fruit with a solution con- taining. borax in sufficient concentration to exert pronounced mold-inhibiting action, and there-' /.. after applying to the fruit so; reated a thin, film- Be ee like protective coating comprising Waxy material. 2. * a The following article claims” made: by the bata pat: -—.. entees are also submitted for consideration (Tran- ; script, of Record, pages: 602, 603).: . ) | 25.. F resh eitrus fruit of which the- rind or skin/ 1 carries a “non-poisonous _-mold-inhibiting— com. . pound ‘comprising . the borie acid ical, the amount of said eompound—present being very | *. small but sufficient fo ‘render: the fruit: resistant to blue. mald decay. * eo * 27. Fresh citrus fruit as* defined in. claim 25, further characterized by: ‘the fact that its surface ‘is provided with a thin film- like protective coat- ing of waxy material. \ \ os | 7 The mere comparison of sue¢h: cisiine emphasizes | the identity of the two processes. The fact that the Bishop patent contained no article claims is immate- rial, since the product claimed by Brogden and Trow- . bridge in 1925 inevitably. resulted from the practice. . disclosed’ -by Bishop in 1901. It is an élemeuntary . | principle of patent law that an article patent cantiot . be secured where such article necessarily resulted from a process described in an earlier. patent. = is not believed: “necessary to consider at length —_ > 3 all of the remaining claims in suit: Practically “the ae only difference’ specified’ therein which has not al- .- > ready. been discussed is the mild heating to about 115° to 120° F. of, the treating solution. Such heat-- _ ing has merely the well-known. effects’ of - aiding the ' dissolution of the reagent and increasing. its ‘activity, and ‘does not cause any critical or essential change in the process. All of the vlaims, it is submitted, are unpatentable over the disclosure of the: Bishop patent. Much stress has been laid upon the utility of the . - process when applied - to oranges. As_ has, been: ‘pointed out previously, however, Brogden and Trow- | bridge state that that is merely the greatest present utility, of the process, and that the process may be - tised on vegetables. Moreover, the Bishop patent. __ _ contemplated its application, to oranges, and,‘as a matter of fact, the process, was. actually -used on: - oranges (Transcript of .Record,. pagés’ 177 to 183). But even assuming. that. Bishop did not. practice ‘his procéss on oranges, and the case against the Brog- den and Trowbridge patent must rest on Bishop’s* ~ statement that: his process was to be’ used on. the - broad class of ‘‘fruit’’, there would be no invention b] . : by Brogden kind Trowbridge in applying Bishop’s process specifically to oranges to accomplish ‘the same. . result. As was stated in. Milligan and, Higgins Glue . Company v. Upton, 97 U. 8.3, 6: . : ‘Where certain properties . are ‘known to be- long generally to classes of articles there ean: be ‘ no invention in putting a‘new species-of the class. in a condition for the development of its prop- ; erties similar to that in. which other species of the same class have been placed for similar de- velopment.”’ oa é : 09 QO eRe aaa rerio SEBS LOA PES OE OES O° Ph _ Eso RRL ae Ss 25" OR ra oe 2 ASME 205 SLID EP ORE ae . sof a nein Gielen PRA niieBe a ead CORA REA Pie Sata Bucs Stic «324 PA Spe Nah The earliest authoritative case upon ,this subject, however, is the famous case of Brown v...Piper, 91 ' U.S. 37, in which this: Honorable Court held: that > the’ process \ of preserving fish. by ae ee was unpatentable in view of a. prior ‘similar process for _ preserving | corpses. After’ .referring to the prior \ : process this Court stated (page 41): Belin te ‘Here was’ the application of the eonuiel e de- gree of cold, exactly in the manner called. for in. the specification of the appellee, . “This is hardly denied; but it- is insisted that “the: process was never r_ applied by the withess. to ur the preservation. of fish and meats. —___‘*The answer is that this was simply the ‘appli- - cation by the patentee of an old process to a new subject, without any exercise’ of -the inventive faculty and withgut the development, of any idea - which can be’ detined new or. eriginal in the sense: of, the patent Jaw. “The. thing was within. tlie | : circle of what was well known ‘before; and -be: longed to the pyblic.* No one could lawfully ap- | é “propriate. it og himself and exclude others from * using it, in any usual _way for any purpose to _ which it*may be’ desired to apply it. eo “This is fatal ‘ed the patent. “Ames v. Howard, : Sumn. 487; Howe v.; Abbott, 2 Story, 194; Bean ; ; Smallwood, 2 2 Story, 411; Winans v. R: Co., 2. ‘Story 412 ; Hotchkiss v. Greenwood, il How.. In the above case, the holding. is ‘to the effect that _ the: arts of preserving fish | and preserving corpses “are analogous, and the carrying over of a. process from one to the other does not involve invention. -In the present ease, Brogden and. Trowbridge have done little more ‘than. fo attempt to restrict. the. process, -~ used before on: ‘fruit?’ .(including’ ‘‘oranges’’), to a - specific kind of fruit, namely, citrus fruits of which - hydrogenized, on th 20 oranges are one variety. \. * The principles of Brown v. Piper, supra; still. rep-_ | resent the, view. of this couft.. We here’ invite par- ticulay attention to the. case of Berlin Mills Company | v. Procter aé Gamble Company, 254 U. S. 156, where -. this. court, after an examination of the prior. art, with the kiowledge of which the patentee was conclusively charged, held invalid ja patent relating fo, a lard-like | food product consisting of a vegetable oil .partially & ground that ‘the: process ‘in “suit. merely broadened such prior art to a new class bf products, and that this did nét constitute inver- tion. : ‘On pages 165-6 the court say: is ee | ' © ] Sd -mogeneous, substance by a process of hydrogena- *- tion arrested before completion and. that:it.might - be edible, This much of the art was public prop-:. erty. and, open to general use, ° The product of this process, was known and open to public use. To supply such: products ‘as the ‘patentee has. described in'the broad claims in sait.may have. ‘heen new and useful, ‘but does not. in’ our opin- ion arise to the dignity “of invention, and. is an advance step which would occur to one ‘skilled in + the. art when investigafing-and considering: the. Subject. °- |. x This language is directly applicable to the facts in the instant case; for Brogden and Trowbridge. were conclusively ‘presumed to have: known .of the | prior art, including the Bishop patent, and their applica- : tion of the: Bishop. process to citrus fruits would not amount to invention over stich prior art. Further- ae ot This record estahlishes. that, it was known be- | fore Burchenal took up the subject that a vege- , ‘ table oil could be changed into. a’ Semi-solid,’ ho- - mene: "ov \ e ‘ \ o , ; *. Rota at \ BE 2 OIA MOSS EISELE RE ARR - ~— Lee PE at as Ai ora “ 3 . : , .* . SP Sihaithte barristers midis ae RON Bo 8. . . -“~ , '« ! Baker rv. Duncombe Manuf! uring Company, 146 ; ol : e . more, by the time of the Brogden and Trowbridge application, the Bishop process and the product there- of were ‘‘publie property. and open to general use.’ _ That the Cireuit Court of Appeals in deciding the instant case, departed from these well-known and controlling principles, is disclosed Dy thé following. from its opinion (Transcript of Record, p. 577). se 0 © *© | We'have an old and well-known sub- stance applied in a new and useful way, and this constitutes invention.’’ . Had the court below given sufficrent weight to the - Bishop patent, counsel are convinced the edurt could’ not have concluded Brogden and Trowbridge had developed ‘ta new and useful’’ appliention of borie acid. However, even conceding, for the purpose of argument, Niat ‘there was a ‘‘new and useful way’’: ‘of application, mere novelty and utility alone can not constitute invention. The ‘new and useful way’ ‘must have been unobvious. To repeat (italies ours) : _*To supply such products. as the patentee has deseribed in the broad claims in suit may have been new and-useful, but does not in our opin- ion arise to the dignity of invention, and is an advance step which would oceur to one skilled xv in the art when investigating and considering’ the subject.” (Berlin Mills Co, vc. Procter & Gamble-Co., supra, p. 166.) -ofee To the same effect are Met ‘lain &.-Ortmayer et al., 14]. U.S. 419 (See page 32 hereof) ; Electric Boot and Shoe, Finishing Company v. Little, 138 Fed. 732, and Fed. 744, nanutigeess * e* _ *Indeed, as shown by the matters contained in the Appenilix, p. 37, -the experiments of Brogden and Trowbridge followed exactly ‘upon the lines of others made in the Department of ‘Agriculture nearly twenty years. before, and we contend the results obtained would have been ee = ‘mbjeet’? pe 35, in the art when investigating and con- e su ’*, p. 25. These experiments of the Department of pee Be in 1905 and of Brogden and Trowbridge in 1083 were both within the disclosures or obvious applications of the Bishop patent of the year 1901. Pe i "Fe ‘ e = ’ : “Tt. is see that the holdings of -the Circuit Court of Appeals for:the Third Circuit to the effect that an orange coated with an invisible and minute — = quantity of. preservative was an article of manufac-— facture, within the meaning of the patent. statute;:: that the application of an old process of preserving | fruits and articles of food to-a specific class of fruits _ constituted ‘invention, and that adoption of a proc- — éss by the industry is evidence of invention without - considering whether or. not the question of invention was doubtful, are contrary to the principles of law as established i in other cireuits and by this Honorable c ‘ourt. ) i ee It is accordingly subinttted. that the’ judgment Wig dered by the Cirenit Court of Appeals for the Third ‘ Cireuit in the present suit should be reversed and \ that the claims of the Brogden and Trow bridge pats ent in-suit sneuld: be held invalid. - - “ _ Respect ully’ submitted, CHARLIE. He. McC ALL,,.. 3 “Attorney-General, State of Algbams. 5 Nepales ian Brit” Benaste,* oe | ‘ Attorney-General, State of Arizona. ° aa Naor US. Wers, - Ama eS x | Attorney-General, State of California ' ‘ «* ° este els Frep H, Davis, i ait ~ ae ea ee ““Attorney- General, State of Florida. ack ~Georce M. Napier, 0} ‘Attorney: Gene ral, State: of Geor gia. : Sn ten Piais Bike SUR ace Attorney-General, State of Louisiana. = a Robent Lee Boosie tT, Attorney-General, State of Te ras, November 2 25, 1930. SC a Ice eae oe , APPENDIX: | : When this motion and brief were in pa @ proof form there w as deliv ered to counsel copy of a letter Birigie ‘Nov ember 6, 1930; from the Acting Secretary bene Agriculture, Honorable-R. W. Dunlap, and. ad-- s pee to Honorable, Doyle K. Carlton, Governor Seeat | thee State of “Florida. or aee 4 a As shown by: this letter a copy of which is printed a ‘belong, the certificate of “the Secretary. of Agricul- ture “dated: January 18;° 1927, being Defendants Jéx- to the petitioners for lise before ‘the District, Court, These records:conelusively: show that the Department of Agriculture, by a series of experiments conducted -_ in the year. 1905 established, as the Acting Secretary states, that ‘‘the:development of blue’ mold on citrus . fruits was inhibited by dippits such fruits for a, few. minutes ima sufficient - ‘sOhition of boric acid sand further that any sin'plus of id ag crystals could be removed from the fruit by. rinsing -in ‘fresh water These records fully: corroborate the statements. made on page 34 hereof, to the effect that the failnie of the Departmént tos make © these definitely, . favorable results known. to the trade was die. (a) \ tothe belief - that public fear of chemically treated friit might _ result in the boycotting of American oranges, (Letter ee ‘ebruary 6, 1905, pp.-39- 40, and Letter February 15,°’ ~. 1905, p. 40), and (b) to the. assumption that the utili- gation of this’ process .Wwould. lead’ tp less careful. — : handling | of the fruit. {Letter siding 8,. 1909, pp. 48-44.) ue eae rare hibit Noe9 (‘Transeript | lof Record, 1475-80), furnished | failed to have ‘incorporated, thereiri certain highly : Important, material official records, of. his: Department, : . due to failure. to Jocdte these records in the files of | the Department, at /the time. of such certification. without impairing the efficacy’ ef the treatment.” ” » . . 38 ‘ The text of the Ag¢ting Secretary's letter follows (italies ours) : 57 I have the honor to refer further to your telegrams of October 21 and 28, 1930, requesting certified copies of ° Departmentalgrecoris dealing with experiments: involving the application of boric acid to citrus fruits, conducted by the Bureau of Plant hidustry, copies of _ Which records were not*contained under ihe Depart- “men’s previous certificate dated January 18, 1927, _ obtained by the parties in interest for use in the case of American Fruit Growers, Inc., v.. Brogdex Com- . ‘pany, now pending in the Supreme Court of the United States. ~ Jn compliance with your request, | am enclosing the following described copies of newly discovered reports relating to the subject matter above described as fol- lows: Date Nature 0 f Record 1904 ; Dee. 31 Letter from H. C. Gore to G, Harold Powell endorsed ‘‘four engloésures’’ but here ac- companied by only two pakes of notes now available, being a payt of the notes shown in said Defendant’s ‘‘ Exhibit No. 9°’. Jan.5 Letter from H. C. Gore to G. Harold Powell \ with five pages of notes and a sixth page showing a photograph of oranges with no- tations reporting on continued like boric acid work and discussion of same between Messrs. Taylor, Fulton, Scott and Gore. It is to be considered that these notes which are dated January 3, 1905 seem’‘to fill a gap between: the first two pages and.the last four pages of such certified record (Defen- dant’s ‘‘Exhibit No. 9’’), and that there / Date Jan. 0. 39 © was an indication of an-omission of said_ _ certified record from the fact that.the first two pages are numbered 9 and 10 and the remaining pages numbered 16, 17, 18, 19. Nature of Record Letter from William A. Taylor, Pomolo- ; gist in-Charge of Field invéstigations, to G, Harold Powell referring to the boric acid ¢ work, its “very striking results in the line © of preventing rot development”? and the . conference thereon, as last above referred J an. 10 - Jans 11 Date Jan. 13. to. Letter from H. C. Gore to G. Harold Pow ell reporting further on said borax treatment and enclosing four pages of notes which- form the conclusion of said certified record _ (Defendant’s ‘‘ Exhibit No. 9’’/ pages 1477- 1480); also a fifth page showing’. —— graph of oranges with notations. Letter from G. Harold ‘Powell to W. A. Taylor answering letter of January 5th, discussing treatment and commenting ‘People shy at.the word borax now a days © and I have not thought of suggesting it until the boys work a good deal more on it. | Then we may try, it on Ge quiet on a com- ‘mercial scale.’’ Nature of Record ae Letter from G. Harold Powell to H. C. Gore - replying to. reports on boric acid treatment . . referred to as ‘striking’, discussing same and referring to danger of draw-baek from a commer¢ial standpoint. “*The trade shies: at its own shadow and a borax panic could, | easily be worked up by the dealers in — * erystal Jan. 17 Ctaciating date .of report on work in con-- tinuation of that previously certified as | ~ Jan: 20 Jan. 20 Feb. 6 40° s os foreign lemons who are fierce competitors with the Californians.’’ ‘Experiments sug- , gested to determine . minimum efficient strength of acid and minimum duration of . dip, with reference to possibility of redue- - ing al strength to the point where no lization on the fruit would be shown, shown by Defendant’s ‘*Exhibit No. 9’’. Particular attention is requested to the conclusion made known and recorded in connection. with Experiment 8, to wit, “‘The experiment indicates that by the ten minute dip in .saturated boric acid: solu- tion, the abraded portion of the fruits will be Protecte from decay caused by spores falling. ist them after the boric acid treatment.’’\ Further particular attention is requested to the determination of. ef- fective strengths as found by Experiments 11 to 16, inclusive. Letter from H. C. Gore to G. Harold Powell reporting further on the progress of said work and enclosing a copy of the last men- _ tioned report, Schedule 8. Letter from W.-A. Taylor to G. Harold Powell. acknowledging letters of the 9th, lith and 13th inst. and telegram of the 14th inst; particular reference made. to ‘work on ‘determining efficacy of various ; strengths. of solution. Letter. from W. M.: Scott to G. Harold - Powell reporting that 3 per cent strength of. boric acid used as a dip to prevent the. development of the Penicilliwm rot in * - shipments. =. oranges and lemons acts almost perfectly; refers to prospective cooperation of Mr. Tenny in California and prospective test. Nature of Record ° Reply. from @. Harold Powell to W. M. Scott promising additional observation tests in California and also commercial shipping tests ‘‘in a ear going to Washington or to _ some near-by point’’. This letter expresses © much interest in the Gore-Scott. tests, as- _ “suggestive of the value of the boric acid treatment for the purpose designed,’” but adds, ‘‘I am somewhat. skeptical, however, in regard to the use of boric acid for ‘this purpose, as I am afraid the trade would be very scary if it should get hold of the fact | that any California fruits were dipped in this material. It would especially stir up our German friends.’” - - ~~ > / ; U. S. Department of Agriculture, Bureau of Plant Industry, Cireular to the Citrus Fruit Industry, signed G. Harold Powell, Pomologist in Charge Fruit Storage In- vestigations. This Circular stresses with, much de- .tailed discussion the prime importance _of careful handling... For purpose of ref- erence, there is attached to it here a letter from G. Harold Powell to W. A. Mar. 6. Taylor, of January 13, 1905, setting out the beginnings of the careful handling in- vestigation and some of the difficulties met with in practice. | Report of field work of G. Harold Powell ° for week ending March 6, 1905. This re- > ° Mar.8 Mar. 20 Date Mar. 27 port shows results of boric acid tests with lemons and oranges, apparently examined at Prenda Packing House, Riverside, Cali- ‘fornia, March 6, 1905. Letter from. G, Harold Powell to W, M: Scott. Apparently this letfter-has not been found.. Kis indicated by a reference con- tained in, 'M. Scott’s reply, Schedule 16. Letter from W: M. Scott to G, Harold Powell acknow ledging receipt of G. Harold Powell’s letter of March 8, giving figures ‘quite favorable — to the treatment’ (‘*Test with bori¢ acid on —_—— and lemons.’’) ; N ahur e of Record Letter from. G. Harold’.Powell to W. M. Scott advising that press of work connected | with orange shipments has prevented any. shipments ‘of lemons treated with -horie acid, as anticipated in Scott’s letter of "March 20. But Powell adds, ‘I hope that Apr.12 we may be able-to get at this within the next two or three weeks and make, several shipments direct to Washington.’ Letter from H.C, Gore to W ‘liam A... Taylor purporting to enclose tables of exr- periments with bpric acid and lyemons, and Apr: 20, ‘Taylor reporting on the points last men-. discussing the results, in detail, as favor- able; also suggesting ‘further experiments to. test two points, gw previous soak-- ing or rinsing after ping hinders the action of boric acid on iS fungus growths. Letter trom 41. C, Gare to Wits A tioned, to-wit, that previous: soaking in _ , 1909 . Oct. 26 water for ten minutes interfered with the action of the borie acid extended dip, ‘‘ but that rinsing has no such prejudicial effect: upon the action of boric acid,’ under. x preceding dipping in the borie acid solu- tion. It is to be noted that the reports re- ferred to as inclesed in -this letter and the reports referred to as inclosed in the letter of April 12, Schedule 18, have not been found so far as we can learn! ‘Letter frém G. Harold. Powell to A. D. . Shamel, Physiologist, Pasadena, California, * _ referring to proposals concerning ‘‘the use of bicarbonate of soda—for—bhig mould.’? ‘“T will try to look ap the’ notes and see what ‘we did on this the first-year we went to California.’ We did a good deal of work | at Prenda-and found no difficulty in: killing the blue mould with strengths that did*not- injure the lemons. However, we did not follow this further, as I did not think it -~& good policy :to encourage any method. of Nov. 8 retarding blue mould ‘other than’ sound lemons. The work in California shows that ” the lemon, properly handled, does not: de- ‘cay from blue mould. We have therefore- not thought it wise to develop any short- eut. methods of retarding the rot, as this in. the careful handling -methods' * * ‘would shortly be. followed bya letting-up- «ee ‘I wish you would think along this ‘line somewhat from the standpoint of geneial policy in connection with ‘the industry and - see if you do not agree with me.”’ Letter from G. Harold Powell to A. D. Shamél pursuing at much length the letter of October 26, Schedule 20,. ‘Tf was inter- ested in your remarks regarding the use of 44 o sodium. carbonate solution for blue mould. I do not think there would be very much _ trouble in finding, some: of these solutions, but as L wrote vou before, | think it would a fungicide should: be adopted even to cut out decay in the scarred. and bruised lemons to which you refer, There would certainly be a let-up in the practices s that arse funda- mental jp keeping the, product: sound if the \ _ . average’ grower could. depend upon the an fungie ide to overcome a definite piece of careless work.. Just as soon ax the grower up in others, For that reason, I -have al- - ways felt like holding rigidly in California to careful -handling-as the only meéans of -refarding the .common “blue mould. By _ doing. se, foam satisfied that it has had TY «pletidia effect upon other operations in ie ye lemon industry. There are some in ividuals whe might be able; to-uwse func cides and who would not let up; but they. care few anil far between."" “Ty further compliance with vour request, you are informed that these additional reports were not founel at the time the certificate of January, 18, 1927, was executed, but were discovered more or less by acei- dent during a searvh for other old ree cords j in or ahont ‘the month of. February, 1930, and from time to time- thereafter. © These additional: yeturds were nel pain in the - first “instatice beeause the files containing them had heen taken out of the regular or current’ files, and _ stored. They appear to have been moved from time to time, thereby rendering it’ difficult to find them. ~The failure -to ‘certify these records in. the first: in- stapee. was of course due in no way te, a tack - of diligence on the part of the American Fruit. Grower- ae ae Daan ee be distinctly detrimental to the industry if: lets up in one fundamental, he’ always lets: i . ‘ +* 5 . i Suerte ee 45 : See tT Briefly, jks’ comma: previously: certified: together with these additional reports -and correspondence, show that under a series of experiments conducted by the Department, the development/ of blue mold. on citrus fruits was inhrbited by dipping. such fruits for a few minutes in a. sufficient solution of boric. acid - and further that-any surplus of borie acid crystals could be removed from: the fruit by rinsing in fresh water without impairing the efficacy of the treatment. A copy of this letter, together with a. set of the cer- tified copies énelosed, have this day been sent. to. Messrs. Mohun & Ellott, Attorneys at Law, Trans- porta ition Building, Washington, D.C. a Respectfully, R. W. Dunuap, Acting Secretary. | The copies ‘of the reports referred to: are not here ; ineluded because. to do so would unduly extend this appendix, A complete set of the certified photostatic copies: of such reports is. being filed contemporane- ously with the Clerk of this Court, ache This official communication. and these ‘departmental ‘records which constitute a part of such letter ‘are | proper subjects of judicial notice. See United States v. Brewer-Eliott Oil and Gas Company, 249 Fed. 609, affirmed 270 Fed. 100, and by this C ourt 260 U. S. 77. The trial court in that éas¢ said : : The objections urged to ee ules (from the — Secretary of War), wriften after the trial of this epse, and submitted’on service of copies, are held not tenable as judicial notice should be taken of them (249 Fed. 619). See also - American Banoan Company v.. United Fruit C ampany, 160° Fed. 184, 187. Copies of this motion, brief and appendix: have been duly, served upon counsel for petitioner and respon: dent. ‘ v --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_0498%3A12. Public record. Not legal advice.